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International Registration of Trademarks

For newly-independent countries of the former USSR, the issues of international economic integration are still most relevant. Year by year, the national production level is increasing, crossing the boarders and becoming a part of the global production process. There has been sustainable development of import and export processes, establishment of strong business ties among national production companies and foreign enterprises. Alongside with that, the demand for not only national, but also international registration of trademarks is growing. In this article we will once again speak about specifics of international registration, its pros and cons, touch on the problems major companies face in process of protection of lawful trademark rights in their countries and abroad.

17.07.2017Legalmax Law Firm, legalmaxlaw.com
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Procedures existing in different countries for trademark protection abroad, as well as terms and requirements for completion and filing of documents are very much alike. Irrespective of the country, where an application is filed, the international registration procedure always starts with filing of a so called “basic” national application. The effect of the national protection document is limited by the territory of the state where such application was issued. To obtain trademark protection in other countries, the procedure for international registration is required. If the number of countries where you need trademark protection does not exceed 2-3, it is advisable to apply for registration directly to patent agencies of such countries. In such a case, you should be ready for additional expenses, as you will have to pay for services of patent attorneys in the countries of registration, as well as for translation of documents. In some countries, examination of registration applications may take a while.  For example, in China the term of examination may reach up to 22 months, in Germany – 3 years! Therefore, to our clients who claim registration in more than 2 countries, we recommend most simple and cost-effective solution – international application for trademark registration under the “Madrid System”.

From the date of signing of the Madrid Agreement in 1891 and the Madrid Protocol in 1989, the number of participating countries of the Madrid Agreement/Protocol has increased up to 114 (as of June 2017). The Madrid System provides for a single protection document for international registration. Upon registration, the International Bureau of the World International Property Organization (hereinafter – “WIPO IB”) informs patent agencies of the countries where the applicant is seeking registration.

An application for international registration may be filed by any individual or legal entity, having residence/citizenship/factual (not fake) enterprise in the territory of one of the participating countries of the Madrid Union.

The lists of participating countries of the Madrid Protocol and Madrid Agreement are slightly different (in favour of the Madrid Protocol), however this difference does not affect the cost of international registration. There is however a significant difference in the term of examination of applications: 12 months – under the Madrid Agreement and 18 months – under the Madrid Protocol. One more distinction is that an application under the Madrid Agreement may be filed on the basis of the “basic” national registration of a trademark, while an application to the countries of the Madrid Protocol, likewise an application to the countries being parties to the both Madrid Agreement and Madrid Protocol, may be filed on the basis of filed application for national trademark registration.

The key advantage of the international trademark registration is a “one-stop-shop” principle. I.e. having filed just one application to one agency (WIPO) and in one language (Spanish, French or English), an applicant gets a chance to seek trademark legal protection in over a hundred countries at one time. Whereby, trademark protection in each country will have the same force and effect, as if filed directly in each separate country. Moreover, unlike application of the European Union filed to the Office for Harmonization in the Internal Market (OHIM), decision issued under the Madrid System by an authorized agency of one country does not affect the chances of such application in other countries claimed by the applicant.

Having over a centennial history, the Madrid System has proved its effectiveness. It allows to avoid extra costs for services of patent attorneys on filing and records-keeping of applications in each separate country, expenditures for translation of documents and etc. Another apparent advantage is that payment of all applicable charges and fees is made in one currency – Swiss Franc. The list of countries where a trademark is registered may be extended afterwards by filing a separate application for subsequent designation and is subject to payment of additional international fee.

Having over a centennial history, the Madrid System has proved its effectiveness

Amongst minuses of the Madrid System, there should be mentioned direct correlation of the application for international registration from the “basic” national registration. According to the Madrid Agreement, availability of the national registration/filed application for registration is a mandatory condition for filing of an application for international registration. Moreover, if within five year after the international registration, the “basic” national registration becomes void, the international registration is automatically extinguished. To companies, which for various reasons lost their national registration, we recommend to immediately apply for trademark registration separately in each country of interest. If such application is filed within 3 months from the date of extinguishment, then the date of the original international registration shall be considered the date of application to separate national agencies.

The cost of the international registration under the Madrid System may vary, depending on the trademark coloration, number of claimed classes, number of countries, as well as on the amount of formal fees and duties (incl. individual), as may be collected officially in the claimed countries. To calculate the amount of official fees, we recommend using the calculator available at the website of WIPO (www.wipo.int).

The term of the international registration is 10 years, with possible extension for the subsequent extension for another 10 years (any number of times). Extension of registration is subject to payment of additional fee, making, as a rule, around 50% of the initial registration fee.

If should be noted that the term and results of examination of application by WIPO depend on correctness and regularity of application and completeness of the package of the required documents. Otherwise, the application will be returned to the territorial agency of the country of origin of the trademark. In light of this, in order to secure yourself against extra expenses and delays we recommend you to seek professional advice!

Patent attorneys and lawyers of Legalmax have solid experience of international registration of trademarks of companies and individuals under the Madrid system.

We will be glad to answer your questions by email at: info@legalmaxlaw.com, kz@legalmaxlaw.comor by phone: +7 (727) 329 12 49; +7 (705) 139 42 42; or +7 (727) 311 54 87.

Good luck!

 


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